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`DOCKET NO.: 0107131.00649US1
`FILED ON BEHALF OF INTEL CORP.
`BY: Dominic Massa, Reg. No. 44,905
`Richard Goldenberg, Reg. No. 38,895
`Daniel V. Williams Reg. No. 45,221
`Yvonne Lee, Reg. No. 72,162
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Email: Dominic.Massa@wilmerhale.com
`Richard.Goldenberg@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`Intel Corporation
`Petitioner
`
`
`
`v.
`
`VLSI Technology, LLC
`Patent Owner
`____________________________________________
`
`Case IPR2019-01196
`Patent No. 7,246,027
`____________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE REQUESTING
`DENIAL UNDER SECTION 314(a)
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`THE PATENT OWNER’S 314(A) ARGUMENT IS WITHOUT MERIT ... 1
`A.
`There Is No Gamesmanship Or Other Justification For
`Denial .................................................................................................... 1
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`I.
`II.
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`Petitioner’s Reply To Request For Denial Under Section 314(a)
`IPR2019-01196
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`
`INTRODUCTION
`Petitioner respectfully requests the Board reject the Patent Owner’s (“PO’s”)
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`I.
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`demand that the Board deny institution on the basis of § 314(a). The district court
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`schedule, standing alone, is insufficient to justify denial because the Petitioner has
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`not engaged in gamesmanship, and because the Petitioner filed expeditiously two
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`months after the PO identified the asserted claims in the litigation.
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`II.
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`THE PATENT OWNER’S 314(A) ARGUMENT IS WITHOUT
`MERIT
`A. There Is No Gamesmanship Or Other Justification For Denial
`First, the PO primarily relies on NHK Spring Co., Ltd. v. Intri-
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`Plextechnologies, Inc., IPR2018-00752, Paper No. 8 (PTAB Sep. 12, 2018) and ZTE
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`(USA), Inc. v. Fractus S.A., IPR2018-01461, Paper 10 (PTAB Feb. 28, 2019) to
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`justify its request. POPR at 9-10. However, in NHK Spring, the Board did not solely
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`rely on the advanced state of the district court proceeding to justify denial. Instead,
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`the Board first weighed numerous factors under § 325(d) (id. at 10-18), and found
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`discretionary denial to be appropriate because (1) “the Examiner [already]
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`considered the prior art” asserted by the petitioner during prosecution (id. at 11-12),
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`(2) “the Examiner [had already] evaluated [the previously examined art] . . . and
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`substantively applied their teaching” to reject claims (id. at 13-14), (3) “the findings
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`the Examiner made during prosecution and the arguments Petitioner [made were]
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`substantially the same” (id. at 14-15), (4) the Petitioner failed to point out how the
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`1
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`Petitioner’s Reply To Request For Denial Under Section 314(a)
`IPR2019-01196
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`Examiner errored in evaluating the previously raised art (id. at 16), and (5) the
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`Petitioner failed to persuade the Board to reconsider the previously raised art and
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`arguments (id. at 16-18). After concluding that § 325(d) justified denial, the Board
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`noted that that § 314(a) builds upon a § 325(d) analysis, and specifically determined
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`that the advanced state of the district court proceeding was an “additional factor” to
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`justify denying the petition. Id. at 20. Similarly, in ZTE (USA), the Board only
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`considered § 314(a) after engaging in an § 325(d) analysis. Here, the PO does not
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`assert that denial of institution is justified under § 325(d) and does not identify any
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`similar facts described in NHK Spring or ZTE (USA). Rather the only factor the PO
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`identifies is the state of the district court proceeding.
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`E-one, Inc. v. Oshkosh Corp., IPR2019-00161, Paper 16 (PTAB May 15,
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`2019) is also substantially different. There, the Board noted that—based on
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`arguments from the Petitioner in opposition to a motion for preliminary injunction
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`in the district court—the obviousness arguments in the petition “overlap
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`substantially with those in the Parallel District Court Case.” Id. at 8. PO here makes
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`no such showing and cannot make any such showing given that claim construction
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`has yet to be completed in the district court, and that expert reports are not due until
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`December 23, 2019. Ex. 1020 [Dkt. 40] at 6.
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`Second, there is no gamesmanship in the timing of this Petition. At the outset
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`of the district court case in 2018, the PO asserted that Petitioner infringed a large
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`2
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`Petitioner’s Reply To Request For Denial Under Section 314(a)
`IPR2019-01196
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`majority of the claims in the ’027 patent. POPR at 3. The district court then ordered
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`the PO to reduce the number of asserted claims, and the PO filed its identification of
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`the narrowed claims on April 26, 2019. Ex. 1021 (Patent Owner’s Identification of
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`Asserted Claims at 1). Two months later, on June 28, Petitioner filed this petition.
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`The Petitioner sought review of those claims necessary to remove the dispute
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`between the parties, and did so within a reasonable amount of time after narrowing.
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`Third, there is no guarantee that trial will occur before the FWD here. While
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`the schedule for FWD in an IPR is set by 35 U.S.C. § 316(a)(11), there is no such
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`limit in district court. Any number of factors could (and frequently do) delay trial.
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`Fourth¸ the Patent Owner’s assertion that the same art and arguments in the
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`district court action will be addressed during trial is supposition. Intel’s invalidity
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`contentions identify thirteen prior art combinations not at issue in IPR2019-001196
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`and include combinations with product prior art. Moreover, in the event that the trial
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`is delayed, and that the IPR proceeding goes first, any art subject to IPR estoppel
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`would not go forward in the district court. Thus, the Patent Owner identifies nothing
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`to suggest that were both proceedings to occur, there would be any expenditure of
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`resources on the same issues. See Intel Corp., v. Qualcomm, Inc., IPR2019-00129,
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`Paper 9 at 12 (noting the possibility of termination of parallel proceeding weighed
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`against denial under 314(a)).
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`Indeed, as it presently stands, Petitioner here actually challenges six claims
`3
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`Petitioner’s Reply To Request For Denial Under Section 314(a)
`IPR2019-01196
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`not at issue in the district court—claims 2, 6, 7, 9, 11, and 12. Thus, this petition is
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`superior to the invalidity case in the district court since not only will it resolve
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`pending claims in the district court, but it will also resolve claims that the Patent
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`Owner may attempt to assert against Petitioner in the future. Petitioner should be
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`permitted its right to invalidate those claims.
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`Fifth, the decision to exercise discretion is “part of a balanced assessment of
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`all relevant circumstances in the case, including the merits.” Intel v. Qualcomm,
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`Inc., IPR2018-01261, Paper 8 at 15 (PTAB Jan. 15, 2019); Office Patent Trial
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`Practice Guide Update referenced at 83 Fed. Reg. 39,989 (Aug. 13, 2018) at 10–11.
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`In Intel v. Qualcomm, Inc., the Board rejected a patent owner’s request for
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`discretionary denial despite the fact that the patent owner and petitioners would
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`address identical combinations against identical claims in both the ITC and Southern
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`District of California months before the decision in the IPR. See Intel v. Qualcomm,
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`Inc., IPR2018-01261, Paper 8 at 14. Like Intel v. Qualcomm, the case here presents
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`a strong likelihood of demonstrating that the challenged claims are invalid.
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`Respectfully Submitted,
`
`/Daniel V. Williams/
`Daniel V. Williams, Reg. No. 45,221
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`4
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`Petitioner’s Reply To Request For Denial Under Section 314(a)
`IPR2019-01196
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 4, 2019, I caused a true and correct copy
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`of the following materials:
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` Petitioner’s Reply to Patent Owner’s Preliminary Response
`Requesting Denial Under Section 314(a)
` Exhibits 1020-1021
` List of Exhibits
`to be served upon the following by ELECTRONIC MAIL at the following email
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`addresses:
`
`H. Annita Zhong (Reg. No. 66,530)
`Benjamin Hattenbach (Reg. No. 41,820)
`S. Adina Stohl (Reg. No. 78,293)
`
`Irell & Manella
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
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`Emails:
`
`hzhong@irell.com
`bhattenbach@irell.com
`astohl@irell.com
`VLSIiprs@irell.com
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`
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`
`
` /Daniel V. Williams/
`Daniel V. Williams
` Registration No. 45,221
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`1
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`Petitioner’s Reply To Request For Denial Under Section 314(a)
`IPR2019-01196
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`LIST OF EXHIBITS FOR
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`PETITIONER’S REPLY TO PATENT OWNER’S
`
`PRELIMINARY RESPONSE
`
`Exhibit
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`Description
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`U.S. Patent No. 7,246,027
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`U.S. Patent No. 6,933,869 to Starr et al. (“Starr”)
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`U.S. Patent No. 7,577,859 to Bilak (“Bilak”)
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`U.S. Pat. No. 7,583,555 to Kang et al. (“Kang”)
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`Declaration of Dr. David Harris
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`File History of 7,246,027
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`1007
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`U.S. Patent No. 7,170,308 to Rahim et al. (“Rahim”)
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`1008
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`1009
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`1010
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`1011
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`Dictionary of Electrical and Computer Engineering 2004
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`U.S. Patent No. 6,535,735 to Underbrink et al. (“Underbrink”)
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`Joint Claim Construction Chart, May 3, 2019
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`Y. Tsividis, Operation and Modeling of the MOS Transistor, 2nd
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`Edition, McGraw-Hill, 1999
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`1012
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` H. Bergveld, et al., Battery Management Systems, Kluwer
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`Academic Publishers 2002
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`1013
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`U.S. Patent No. 6,333,623 to Heisley et al. (“Heisley”)
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`Petitioner’s Reply To Request For Denial Under Section 314(a)
`IPR2019-01196
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`Description
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`M. Morris Mano, Digital Logic and Computer Design, 1979
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`Microelectronic Circuits, Oxford University Press, 2004
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`Horowitz and Hill, The Art of Electronics, Second Edition, 1989
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`U.S. Patent No. 7,423,475 to Saha et al. (“Saha”)
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`Declaration of Dr. James Mullins
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`Declaration of Dr. Gretchen Hoffman
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`Scheduling Order [Dkt. 40]
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`Patent Owner’s Identification of Asserted Claims
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`Exhibit
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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